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Friday, 17 June 2005

Here’s another of yesterday’s CFI decisions – and this time it’s procedural. Spa Monpole opposed an application to register SPAFORM as a CTM. Spa Monopole meant to base its opposition under Art.8(5) on its SPA mark but, for some reason, it didn’t include a representation of the mark on its notice of opposition. Instead it included the following in the section concerning the earlier mark with a reputation:

– ‘Reputation: in a Member State’;– ‘Member State: Benelux (Registration No 389 230 of 21 February 1983)’;– ‘The opposition is based on: Class 32: Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’

OHIM said that the opposition was inadmissible under r.18(1) of the Implementing Regulations for failure to identify the mark on which the opposition was based.

Not so, said the CFI. The purpose of r.18(1) is was that the indication of the earlier mark on which the opposition is based should be sufficiently clear for OHIM and the other party to the proceedings to be able to identify it before the end of the opposition period. As a result, it is sufficient for the registration number of the mark on which the opposition is based, together with the Member State in which it was registered in order to satisfy r.18(1).

The IPKat decides to try some different spa forms…

The IPKat says that this is a sensible solution. Once the jurisdiction in which the earlier mark is registered is identified, together with its registration, it should be perfectly possible for those whose marks are opposed to identify the mark precisely. Even so, it’s a better idea to represent your mark in all the right places in the first place.

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